WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CSS Polymers Inc. v. Robert Beirne

Case No. D2009-1179

1. The Parties

Complainant is CSS Polymers Inc., Georgia, United States of America, represented by The Gigalaw Firm, United States of America.

Respondent is Robert Beirne, Georgia, United States of America, represented by Hulsey, Oliver & Mahar, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <csspolymers.com> (the “Domain Name”) is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2009. On September 7, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On September 8, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2009. Respondent filed a Response with the Center on October 5, 2009 that is titled an “Answer” and is in the form of a pleading filed in accordance with the Federal Rules of Civil Procedure rather than the Rules.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on October 20, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

(i) the Complainant . . . to provide any relevant dated evidence that supports the statement in Mr. Scata's declaration in paragraph 4: “CSS Polymers has used the trademark CSS Polymers continuously since at least 2002 to identify the products described above.”

(ii) the Respondent . . . to provide any relevant dated evidence of Legible copies of all of the Annexes to their Answer.

On October 30, 2009, Respondent filed a Supplemental Filing intending to respond to allegations in Complainant's Supplemental Filing and, in response to Order No. 1, Respondent provided the Panel with legible copies of documents annexed to its Response.

Neither the Policy nor the Rules, provide for Supplemental Filings by either party except in a few narrow instances not applicable here. The Panel has the sole discretion to determine the admissibility of the Supplemental Filings. The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries,
WIPO Case No. D2003-0447 (denying a Supplemental Submission because, among other things, it did not sufficiently identify the alleged new facts and misstatements to satisfy the panel that they were indeed new facts or misstatements which required a reply).

Applying these principles to the present case, the Panel notes Complainant's reason for filing the Supplemental Filing: “This Supplemental Filing is submitted for the purpose of responding to certain factual and legal inaccuracies set forth in the Response . . . “ Regardless of whether there were factual and legal inaccuracies in the Response, the Panel has reviewed Complainant's Supplemental Submission and concluded that it is chiefly concerned with a dispute ongoing between Complainant's CEO Christoper T. Scata and Respondent concerning Respondent's status when he worked for Complainant. Respondent's Supplemental Filing is of the same ilk. This proceeding is not the appropriate venue for resolving what appears to be a personal and/or business issue, thus the Panel concludes that neither party has made a sufficient showing for having their filings made a part of the record, with one notable exception relating to the documents in Annexes A and B to Complainant's Supplemental Filing. The Panel is making this exception because Complainant has elected to rely on the documents in those Annexes to respond to Order No. 1 which requested in part: “relevant dated evidence that supports the statement in Mr. Scata's declaration in paragraph 4: ‘CSS Polymers has used the trademark CSS Polymers continuously since at least 2002 to identify the products described above.'“ Specifically, in a declaration filed by Complainant's CEO (Christopher T. Scata) in responding to Order No. 1, Mr. Scata declared in paragraph 4: “Documents included as Annex B to Complainant's Supplemental Filing in
WIPO Case No. D2009-1179 show use of the trademark CSS POLYMERS as early as 2004 – prior to Respondent Robert Beirne's registration of the domain name <csspolymers.com> on behalf of Complainant CSS Polymers on August 15, 2005.”

4. Factual Background

Complainant's founder and CEO, Christopher T. Scata, began his company in 2002 but later incorporated it as “CSS Polymers, Inc.” on August 17, 2005. Complainant currently sells worldwide quick-setting polymer-based products (i.e., polyureas, epoxies and urethanes) and applications for the construction industry using CSS POLYMERS. Complainant's core products include: Quick-Repair; Quick-Joint 85; Quick-Joint HM; and Asphalt-Mender.

Respondent registered the Domain Name on August 15, 2005 without permission from Complainant. In the summer of 2006, Respondent left Complainant's employ and created the website that uses the Domain Name. The website offers for sale products such as “polyurea joint fill,” “10 Minute fast set crack fill cartridges,” and “fast set polyurea coatings.”

5. Parties' Contentions

A. Complainant

Complainant alleges, through a declaration by its CEO Christopher Scata, that it began doing business in 2002 under the mark CSS POLYMERS. Complainant further claims that it has used the CSS POLYMERS mark continuously since that time to identify its products. Complainant submitted to the Panel as part of Mr. Scata's declaration copies of specimens that it claims shows Complainant's use of the CSS POLYMERS mark.

Complainant claims that it has annual gross sales of more than US$1M and it spends approximately $5,000 per year on advertising, marketing and business development activities related to the CSS POLYMERS mark.

Complainant alleges that Respondent previously worked as a salesman for Complainant and that Respondent registered the Domain Name without permission from Complainant and launched a website using the Domain Name to sell products which compete with Complainant's products. Complainant further notes Respondent's website includes a disclaimer on its “Contact Us” web page (not its home page) stating: “Polymer Products Direct is not affiliated with CSSPolymers Inc.”

Complainant alleges common law rights in the CSS POLYMERS mark as a result of its use of the mark “in connection with the goods and services set forth above since 2002.” It references in support of this use, copies of business cards, a letter, promotional materials, data sheets, an invoice, an advertisement and the home page of Complainant's website. Complainant further alleges that Respondent registered the Domain Name three years after it began using the CSS POLYMERS mark and that the Domain Name <csspolymers.com> contains the CSS POLYMERS mark in its entirety.

Complainant asserts Respondent has no rights or legitimate interests in the Domain Name because it did not authorize Respondent to register or use the Domain Name, as a general matter, and more specifically, as a result of the previous relationship that existed between them. Furthermore, Complainant claims Respondent has never used nor made preparations to use the Domain Name in connection with a bona fide offering of goods or services insofar as Respondent's website falsely appears to be associated with Complainant and it is selling products that compete with Complainant's products. And Complainant contends that Respondent has never been known commonly by the Domain Name because Complainant has been using the CSS POLYMERS mark for seven years. Finally, Complainant alleges that Respondent is making use of the Domain Name with the intent for commercial gain by misleadingly diverting consumers away from Complainant's website and selling competing products on the website associated with the Domain Name.

Complainant alleges Respondent registered and is using the Domain Name in bad faith because Respondent is using the Domain Name to disrupt Complainant's business and for commercial gain. Complainant further asserts that given its established rights in the CSS POLYMERS mark and the fact that the Domain Name is so obviously connected with Complainant given its use of the mark for seven years, Respondent's actions suggest opportunistic bad faith. According to Complainant, Respondent's disclaimer on one page of Respondent's website (other than the home page) cannot cure bad faith that has otherwise been proved and otherwise shows Respondent had knowledge of the CSS POLYMERS mark. Lastly, Respondent's failure to respond to a cease and desist letter is further evidence of bad faith.

Complainant requests the transfer of the Domain Name from Respondent to it.

B. Respondent

Respondent contests that Complainant began doing business in 2002 as “CSS Polymers” and that it has used the CSS POLYMERS mark continuously since 2002. Respondent alleges that in 2003 Complainant was doing business as Construction Sales Solutions. Respondent contests that Complainant has shown it spent advertising dollars on the CSS POLYMERS mark prior to 2009.

Respondent contests he ever worked for Complainant's CEO as a sales person, rather, he claims he was a partner. Respondent claims he created the name CSS POLYMERS and the associated website and registered the Domain Name while believing he was an equal of Complainant's CEO in the company. Respondent claims that he paid for the Domain Name and has maintained the Domain Name since that time.

According to Respondent, when Complainant's CEO incorporated the company in 2005, the CEO refused to issue shares or pay profits to Respondent. Respondent terminated his relationship with the CEO. At the time of termination, Respondent offered to sell the Domain Name to Complainant's CEO in return for a payment of profits and out of pocket expenses owing to him. That offer was not taken, so Respondent retained the website and Domain Name for his own business which Respondent admits is in competition in part with Complaint's business.

Respondent alleges that his common law rights in the CSS POLYMERS mark preceded Complainant's use of the mark and Complainant has never paid Respondent for the use of the mark. Respondent has generally denied Complainant's allegations that Respondent has no legitimate interests in the Domain Name.

Regarding bad faith registration and use, Respondent claims he registered the Domain Name and created the website with the intent of pursuing his own business interest albeit in partnership with Complainant's CEO. Complainant did not contribute in any manner to creating the Domain Name and website and there was never any understanding the Domain Name was being registered for Complainant's benefit. Respondent claims he is not using the Domain Name to disrupt Complainant's business; rather, Complainant seeks the Domain Name to the detriment of Respondent.

Respondent made of record copies of checks, invoices and other documents showing Complainant's use of “Construction Sales Solutions” from 2003 to 2005. Respondent claims that it is only after Complainant created the corporation and refused to issue shares that Complainant began to use the CSS POLYMERS mark. From 2005 to 2009 Respondent has been using the Domain Name and website regularly for his business.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Because the Panel has determined that Complainant has failed to carry its burden to prove element (i) under Paragraph 4(a) of the Policy, it has not addressed the other two elements.

A. Identical or Confusingly Similar

Under Paragraph 4(a)(i) of the Policy, Complainant must demonstrate rights in the mark that it asserts the disputed domain name is identical or confusingly similar to. In this case Complainant is not relying on a registered mark. Rather, it asserts common law trademark rights in CSS POLYMERS. It is well settled that the term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g.,The British Broadcasting Corporation v. Jaime Renteria,
WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.
WIPO Case No. D2002-0005, The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,
WIPO Case No. D2001-0218; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7 (hereinafter, “WIPO Overview”).

To establish common law rights as a trademark in CSS POLYMERS, Complainant needed to show it acquired secondary meaning, i.e., that the public associates the asserted mark with Complainant's goods and services. See First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA 506772; see also CPP, Inc. v. Nokta Internet Technologies,
WIPO Case No. D2008-0591 (holding that when relying on common law rights in UDRP proceedings, “the Complainant must adduce sufficient evidence to demonstrate that the claimed mark has in fact been used as a mark labeling goods or services and, through its use, attracted significant goodwill and reputation associated with the Complainant's goods or services in a definable market.”); WIPO Overview (“Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).

On the record here, Complainant has failed to provide sufficient evidence to meet the required standards for showing that Complainant has used CSS POLYMERS in a way and to an extent that would justify a finding of trademark rights under the Policy.

The Panel begins with the sworn statement that Complainant's CEO made of record in this proceeding, that Complainant “has been using CSS Polymers continuously since at least 2002” to identify the products it now sells in connection with the alleged mark CSS POLYMERS. In an attempt to support that statement, Complainant made of record certain business cards, a promotional letter, promotional materials, data sheets, an invoice and two advertisements. None of these documents, however, proves the CEO's statement or sufficiently establishes Complainant's claim of common law rights to CSS POLYMERS since as early as 2002.

The business cards do not assist because they are not dated nor has Complainant provided any evidence that would establish how and when they were used. The promotional letter is dated September 23, 2008 long after the year (2002) Mr. Scata claims it began using CSS POLYMERS, and long after the date Respondent registered the Domain Name (August 15, 2005). The promotional materials and data sheets both have a “revision date” of December 28, 2006, also, long after Mr. Scata's sworn statement that he began using CSS POLYMERS and the date Respondent registered the Domain Name. The sole invoice Complainant submitted uses CSS POLYMERS, but it is dated the latest of all the documents submitted, June 29, 2009. Thus, it fails to show use of CSS POLYMERS as early as 2002 and certainly not use before Respondent registered the Domain name. Lastly, the two advertisements, which do use CSS POLYMERS, are equally unhelpful insofar as one is dated in May 2009 and the other is undated. Thus, all of the documentation that Complainant made of record in its Complaint fails to show use of CSS POLYMERS at least as early as 2002 and certainly not before the date Respondent registered the Domain Name.

Like the documents discussed above, the documents annexed to Complainant's supplemental filing that Complainant is relying on to respond to Order No. 1, fail to show the requisite common law rights in CSS POLYMERS. Complainant submitted copies of two checks one dated in 2004 issued in the name of Construction Sales Solutions, not CSS POLYMERS, and the other issued in the name CSS POLYMERS, but is dated in 2006 (long after 2002 and the date Respondent registered the Domain Name). Complainant submitted additional invoices that show use of CSS POLYMERS before August 15, 2009 (registration of the Domain Name). There is one invoice from 2004 and four invoices from 2005. However, in its Response, Respondent made of record documents such as invoices, purchase orders, sales orders and picking sheets dated in 2003 and throughout 2005 from vendors to Complainant showing that Complainant was doing business under Construction Sales Solutions, not CSS POLYMERS.

In paragraph 6 of Mr. Scata's declaration responding to Order No. 1, Mr. Scata claims that “[d]ue to the lack of better record-keeping and the Panel's request that Complainant CSS Polymers respond within only four (4) days, I am unable to locate documents showing use of the `CSS Polymers' trademark in 2002.” It was incumbent upon Complainant to assemble the evidence it needed to carry its burden on the elements of the Policy and to support assertions in Mr. Scata's declaration before commencing this proceeding. As per Mr. Scata's admission, it was not time that disadvantaged Complainant but, rather, poor record-keeping. As the Panel has already discussed, the evidence in the Complaint was, from the beginning, insufficient. The Panel's Order No. 1 was intended to benefit Complainant, not burden it.

To carry its burden in this proceeding, Complainant had to show relevant common law rights in the claimed mark CSS POLYMERS. To show common law rights, Complainant needed to adduce sufficient evidence to demonstrate secondary meaning that the claimed mark has in fact been used as a mark labeling goods or services and, through its use, attracted significant goodwill and reputation associated with Complainant's goods or services in a definable market. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The documents Complainant submitted failed to show continuous use of CSS POLYMERS since 2002 as alleged by Complainant's CEO. Moreover, in this Panels assessment it did not show use for a sufficient length of time or for a sufficient amount of sales to support secondary meaning. The same is true for the nature and extent of advertising – one advertisement was not dated and the other was dated long after Respondent registered the Domain Name.

Furthermore, Complainant has asserted, without more, that it spends US$5,000 a year on advertising, marketing, and business development related to CSS POLYMERS. Respondent counters that assertion with argument that Complainant only spent this sum in the last year. The Panel finds that Complainant's conclusory statement is insufficient to establish common law rights in CSS POLYMERS without supporting evidence to establish the requisite manner and extent of the Complainant's use of CSS POLYMERS before Respondent's registration of the Domain Name. See Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc.,
WIPO Case No. D2006-0703. Mere assertions of common law rights in a mark are insufficient without sufficient accompanying evidence to demonstrate that the public identifies the Complainant's mark exclusively or primarily with the Complainant's products. See, e.g., Yao Ming v. Evergreen Sports, Inc., FA 154140 (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name”); see also Saint Francis Hospital and Medical Center v. Registrant (187640), WIPO Case No. D2006-0543 (holding Complainant's failure to produce any evidence in support of its allegations that the asserted mark had acquired secondary meaning was fatal to its claim under paragraph 4(a) of the Policy).

Because Complainant has failed to produce the requisite evidence to show that CSS POLYMERS has acquired secondary meaning, it has not established common law rights in that term and, thus, it has failed to meet its burden under paragraph 4(a)(i) of the Policy. Insofar as Complainant has failed to carry its burden under paragraph 4(a)(i) of the Policy the Panel need not decide the other elements. The Panel notes however that even if Complainant succeeded in adducing sufficient evidence of common law trademark rights in CSS POLYMERS as of the time it filed the Complaint, the Panel believes there is insufficient evidence in this proceeding to find that these rights existed back in 2005 when Respondent registered the Domain Name. Thus, in proving bad faith under the Policy, Complainant would have had a significant challenge on the record here showing Respondent had Complainant's alleged mark in mind when it registered the Domain Name.